How does the Donaldson case impact single means claims?
The In re Donaldson Co. case has significant implications for single means claims. According to MPEP 2164.08(a): “The Federal Circuit has held that a single means claim which covered every conceivable means for achieving the stated result was held nonenabling for the scope of the claim because the specification disclosed at most only those means…
Read MoreWhat is the difference between reexaminations ordered under 35 U.S.C. 304 and 35 U.S.C. 257?
The MPEP distinguishes between reexaminations ordered under different statutory provisions: 1. Reexaminations ordered under 35 U.S.C. 304: These are standard ex parte reexaminations The certificate states “Reexamination Request” before the filing date and number They continue an established ordinal numbering sequence 2. Reexaminations ordered under 35 U.S.C. 257: These result from a supplemental examination proceeding…
Read MoreWhat is the difference between ‘on sale’ and ‘public use’ in patent law?
While both ‘on sale’ and ‘public use’ are forms of prior art in patent law, they have distinct characteristics. According to MPEP 2152.02(d) and related sections: On Sale: Refers to commercial activities involving the invention, such as offers for sale or actual sales. It doesn’t necessarily require the invention to be publicly visible or used.…
Read MoreWhat is the difference between official notice and judicial notice in patent law?
What is the difference between official notice and judicial notice in patent law? While both official notice and judicial notice involve recognizing certain facts without formal evidence, they are used in different contexts and have distinct characteristics: Official Notice: Used by patent examiners during the examination process Governed by USPTO guidelines and the MPEP Can…
Read MoreWhat’s the difference between AIA 35 U.S.C. 102(a)(1) and 102(a)(2) regarding patents as prior art?
The main difference between AIA 35 U.S.C. 102(a)(1) and 102(a)(2) lies in the timing and nature of the patent documents considered as prior art. The MPEP notes: “Note that a U.S. patent that issues after the effective filing date of a claimed invention and is not available as prior art against that invention under AIA…
Read MoreHow is the public accessibility of an electronic publication determined?
The public accessibility of an electronic publication is determined on a case-by-case basis, considering various factors. According to the MPEP, citing Medtronic, Inc. v. Barry: “The determination of whether a document is a ‘printed publication’ under 35 U.S.C. § 102(b) ‘involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members…
Read MoreWho determines if an appeal brief is compliant in ex parte reexamination?
Since May 25, 2010, the Patent Trial and Appeal Board (Board) has the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceedings comply with 37 CFR 41.37. The MPEP states: “The Board also has the sole responsibility for determining whether corrected briefs comply with 37 CFR 41.37, and addresses any inquiries…
Read MoreWhat is the definition of “interfering subject matter” in patent law?
“Interfering subject matter” in patent law refers to claimed inventions or claimed subject matter that are not patentably distinct from each other. According to MPEP 2301.03, interfering subject matter is defined as follows: “Interfering subject matter” is defined as (A) those portions of an application claim that are patentably indistinct from the subject matter of…
Read MoreWhat makes a “Use” claim definite according to patent law?
A “Use” claim can be considered definite if it clearly recites active, positive steps that delimit how the use is practiced. The MPEP 2173.05(q) provides guidance on this matter, citing the case of Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992): “In the case of Ex parte Porter, 25 USPQ2d 1144…
Read MoreWhat happens if a notice of appeal is defective in ex parte reexamination?
If a notice of appeal is defective in ex parte reexamination, the patent owner will be notified and given an opportunity to cure the defect(s). The MPEP 2273 states: “Where a notice of appeal is defective, the patent owner will be so notified. In third party requested reexaminations, Form PTOL-475 will be used to provide…
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